Ex Parte Bimbo et al

Patent Trial and Appeal Board

Aug 23, 2017

13940410 (P.T.A.B. Aug. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
0100/0226 3088
EXAMINER
WAY, JAMES R
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
13/940,410 07/12/2013
135866 7590 08/23/2017
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
Frank A. Bimbo
08/23/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK A. BIMBO and JOHN DOUGLAS ILG
Appeal 2016-005711
Application 13/940,410
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank A. Bimbo and John Douglas Ilg (Appellants)1 appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—21. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Smiths Medical ASD,
Inc. Appeal Br. 3.
Appeal 2016-005711
Application 13/940,410
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. Apparatus, comprising:
a holder having a body including a cap having a neck
projecting therefrom, the neck extending away from the cap from
a proximal end that is integral with the cap to a distal end, the
neck having an outer circumferential wall defined by an outer
diameter, the outer diameter increasing in size from the proximal
end of the neck to the distal end of the neck to form a tapered
outer circumferential wall;
a base to which a needle housing is hingedly attached
having an aperture defined by a non-ending inner wall that
extends between a proximal end of the base and a distal end of
the base, the inner wall having a diameter that increases in size
from the proximal end of the base to the distal end of the base to
form a counterpart reverse tapered inner wall that enables the
base to substantially form fit about the tapered outer
circumferential wall of the neck;
wherein the respective dimensions of the tapered outer
circumferential wall of the neck and the counterpart reverse
tapered inner wall of the base are configured such that, after the
base is fitted onto the neck, the base is prevented from
disengaging from the neck and a predetermined friction is
established between the base and the neck to prevent the neck
and the base from freely rotating relative to each other; and
whereby the base and neck are rotatable relative to each
other when a force sufficient to overcome the predetermined
friction is applied to rotate the housing and the holder relative to
each other.
REJECTIONS
I. Claims 1—21 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
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Application 13/940,410
II. Claims 1, 4, 6—9, 11, 12, 14—17, 20, and 21 stand rejected under
35 U.S.C. § 102(b) as anticipated by Hollister (US 5,154,285,
iss. Oct. 13, 1992).
III. Claims 2, 3, 5, 10, 13, 18, and 19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hollister and
Simpson (US 7,250,038 B2, iss. July 31, 2007).
DISCUSSION
Rejection I
The Examiner’s articulated basis for the rejection of claims 1—21
under 35 U.S.C. § 112, second paragraph, is that “[i]t is unclear what is
meant by the terminology of a ‘non-ending inner wall.’” Final Act. 4. The
Examiner explains that independent claims 1, 9, and 17 “define[] that the
wall extends between ‘a proximal end and a distal end[,]’ thus providing two
end points to the wall.” Id. The Examiner takes the position that “there [is
not] a consistent definition of how the phrase of a ‘non-ending inner wall’
should be . . . interpreted.” Ans. 2.
Appellants argue that the term “non-ending” does not render the
claims indefinite because they “have clearly set forth the ‘special definition’
of the term in the [Specification, so that there is adequate notification to the
public of what the term ‘non-ending wall’ means.” Appeal Br. 10 (citing
Spec. H32—34, Figs. 4—7,). In particular, Appellants point to paragraph 33
of the Specification, which, according to Appellants, describes “that the
‘non-ending inner wall’ may be considered ‘an inner circumferential wall
that is divided into a number of sections with non-circumferential sections
alternating with circumferential sections.’” Reply Br. 3. According to
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Application 13/940,410
Appellants, “the flat and circumferential surfaces are continuously joined,
and therefore the inner wall is non-ending.” Appeal Br. 8 n.l; see also id.
(asserting that “there is no ‘gap’ at the junctions where the flat and
circumferential surfaces meet”). Appellants also add that the claim language
specifying that the inner wall extends between proximal and distal ends of
the base merely “define [s] the height of the inner wall with reference to the
base.” Id. at 9 (citing Figs. 6—7).
We agree with Appellants. In light of paragraphs 32—34 of the
Specification and the depictions of inner wall 22b shown in Figures 4—7 of
the drawings, a person of ordinary skill in the art would understand that
“non-ending inner wall,” as recited in the claims, requires a continuous inner
wall having no gaps between sections. Accordingly, we do not sustain the
Examiner’s rejection of claims 1—21 under 35U.S.C. § 112, second
paragraph, as being indefinite.
Rejections II and III
Independent claim 1 recites, in relevant part, a “neck having an outer
circumferential wall defined by an outer diameter, the outer diameter
increasing in size from the proximal end of the neck to the distal end of the
neck to form a tapered outer circumferential wall.” Appeal Br. 22, Claims
App. Independent claims 9 and 17 recite similar limitations. See id. at 23,
24. Appellants argue that “there is no disclosure in Hollister that the outer
circumferential wall of the neck 6 of the tube holder 2 and the internal wall
of the central opening of the base 18 are tapered.” Reply Br. 10—11.
According to Appellants, the neck (i.e., receptacle end 6) of Hollister,
instead, “has a cylindrical shape with a circumferential protuberance or boss
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Application 13/940,410
22 approximately midway along the neck 6.” Id. at 10 (citing Hollister, Fig.
4). For the reasons that follow, Appellants’ argument is persuasive of error
in the rejection.
In rejecting the independent claims, the Examiner relies on Figures 1
and 2 of Hollister. See Final Act. 4—8. In particular, referring to the
annotated reproduction of Hollister’s Figure 2 on page 3 of the Final Action,
the Examiner explains that “a taper is merely defined as becoming smaller or
thinner toward one end.” Id. at 3. According to the Examiner, “if the peak
of the boss of Hollister is viewed as the distal end and the base is viewed as
proximal end, the diameter is increasing in size from proximal end to the
distal end.” Id. The Examiner also notes that “[tjhere [is not] a requirement
within the claims that the outer diameter changes at a consistent rate[,] or [a]
frame of reference within the claim that details an angled incline or slope,
only that that outer diameter increases in size from the proximal end to the
distal end.” Ans. 3.
Although we appreciate the Examiner’s observation that the claims do
not require that the outer diameter of the neck increases at a particular
consistent rate, the claims do require a tapered outer circumferential wall.
In this regard, we agree with Appellants that the outer circumferential wall
of Hollister’s neck (i.e., receptacle end 6) is cylindrical. See Reply Br. 10-
11. Namely, the proximal and distal ends of Hollister’s generally cylindrical
neck appear to have the same diameter, such that the diameter of the neck
does not increase from the proximal end of the neck to the distal end of the
neck to form a tapered outer circumferential wall. The Examiner’s reliance
on the peak of boss 16 as representing the distal end of the neck is
unavailing. Although the peak of boss 16 appears to have a larger diameter
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Application 13/940,410
than the proximal end of the neck, this feature is located at the midway point
of the outer circumferential wall between the distal end of the neck and the
proximal end of the neck. In other words, the Examiner’s interpretation of
the peak of boss 16 as being the distal end of the neck lacks adequate
evidentiary support.
For the above reasons, the Examiner fails to establish by a
preponderance of evidence that Hollister anticipates the subject matter of
independent claims 1, 9, and 17. Accordingly, we do not sustain the
rejection of independent claims 1, 9, and 17, or dependent claims 4, 6—8, 11,
12, 14—16, 20, and 21, as anticipated by Hollister.
In the rejection of claims 2, 3, 5, 10, 13, 18, and 19, each of which
depends directly or indirectly from one of independent claims 1, 9, and 17,
the Examiner does not articulate any findings or reasoning, or rely on any
teachings of Simpson, that would remedy the aforementioned deficiency in
the disclosure of Hollister. Accordingly, we do not sustain the rejection of
claims 2, 3, 5, 10, 13, 18, and 19 under 35 U.S.C § 103(a) as unpatentable
over Hollister and Simpson.
DECISION
The Examiner’s decision rejecting claims 1—21 is reversed.
REVERSED
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